“A Bright Future for Brand Building with Packaging Design Patents”June 4, 2019
When someone develops a great new packaging concept that contributes to the branding of a product and helps differentiate it from competitors, the image of a thought bubble with a light bulb may come to mind. You would want to protect that concept just as well as the package protects its contents. Intellectual property (“IP”) laws exist to protect such concepts. But which type of IP protection is suitable?
Types of IP Protection Available for Packaging
Federal trademark registrations are available for trade dress, including for product configurations and packaging, but often require evidence of “acquired distinctiveness,” sometimes referred to as “secondary meaning,” or proof the product packaging has become distinctive of the goods to relevant consumers. Establishing proof of acquired distinctiveness can take years of strong sales and require costly surveys.
Utility patents protect processes and articles of manufacture. These can be expensive to obtain and examination by the US Patent & Trademark Office (USPTO) can take several years. Design patents protect the ornamental design for an article of manufacture. Design patents are less costly than utility patents and often issue in a fraction of the time. Design patents do not require maintenance fees to keep them in force for their full term, unlike utility patents, which require escalating maintenance fees by the 4th, 8th, and 12th anniversaries of grant. A design patent basically protects how an article looks, as opposed to a utility patent, which basically protects how an article works. Damages for design patent infringement can include the infringer’s profits (or at least that portion of the infringer’s profits attributable to the patented design), as opposed to damages for utility patent infringement, measured as the patent owner’s lost profits, a reasonable royalty, or a combination of the two.
But what if the new packaging concept is a familiar shape, such as a light bulb designed for an unexpected new use: a bottle?
A recent court decision shows design patents are ready for their turn in the IP spotlight. In Kao v. Snow Monster, Judge Lew of the Federal District Court for the Central District of California concluded a jury should decide whether Snow Monster’s light bulb-shaped bottles infringe Peter Kao’s design patent for his light bulb-shaped juice bottle. Mr. Kao developed a light bulb-shaped bottle for his “Gloji” juice, which his company began marketing in late 2006. In January 2007, Kao filed a design patent application that issued in September 2008 as US Design Patent D577,601.
In the Summer of 2016, Snow Monster, a growing chain of dessert shops in Los Angeles, began selling teas in reusable glass drink containers shaped like light bulbs. Snow Monster adorns its light bulb-shaped jars with caps that resemble the threaded base of a light bulb, a flower crown, or the tastier option: a cotton candy cloud.
In December 2017, Mr. Kao sued Snow Monster for infringing his design patent. The Court ruled a jury could find Snow Monster’s jars to be substantially similar to Mr. Kao’s patented design. Even though Snow Monster’s jars, at 27 fl. oz., are more than twice the volume of Gloji’s 8.5 and 11.5 fl. oz. bottles, it is the unscaled drawings of Mr. Kao’s design patent that matter, not Mr. Kao’s commercial product: “A reasonable juror could find that an ordinary observer would conclude that the Accused Product, while slightly larger and with a longer neck and a wider mouth, ‘embod[ies]’ a classic light bulb, ‘or any colorable imitation thereof.”
Snow Monster’s embellishments on its jars, including its logo (described in Snow Monster’s trademark registration as a “geometric pattern with two holes for eyes, two ears, and an open mouth”) and toppers such as the threaded cap, the flower crown, or cotton candy cloud, might, according to the Court’s decision, if provided with every one of its jars, render the designs dissimilar enough to avoid confusion, but the conclusion is difficult, according to Judge Lew, and thus a jury should determine whether the ordinary observer would think the additional features are sufficient to avoid infringement.
Snow Monster argued that when viewed in the context of a number of other pre-existing bottles, the differences between Mr. Kao’s design patent and Snow Monster’s product are significant, but Judge Lew found Snow Monster failed to address concerns as to the authenticity of an online advertisement for light bulb-shaped liqueur bottles.
Mr. Kao’s company, Gloji Inc., filed a trademark application for its product packaging configuration in February 2009, but the USPTO refused registration because portions of the light bulb-shaped package were considered functional. Gloji’s trademark application was ultimately abandoned.
Unless the parties settle, Mr. Kao will have his day in court and a jury will decide whether Snow Monster infringes his patented light bulb bottle design. If the jury decides that Snow Monster’s jars are so similar to Mr. Kao’s design that a purchaser familiar with the prior art would be deceived by the similarity between them, inducing him to purchase one supposing it to be the other, which is known as the “ordinary observer test,” the jury should return a finding of infringement. The next time you consider IP protection for a bright idea in packaging having a unique look, design patents may be a brilliant choice.
As the Kao v. Snow Monster case shows, a design patent can play a starring role in building a brand by helping to protect a unique packaging concept.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney. Views expressed are those of the authors and are not to be attributed to Marshall, Gerstein & Borun LLP or any of its former, present or future clients.